DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1-6, 8, 10-11, 15-20, 22 and 24-25 are objected to because of the following informalities:
With regard to claim 1: Line 12 of the claim, it appears the limitation “said structural member” should be --said elongated roll-formed structural member-- for consistency of the claim language.
With regard to claim 5: Lines 2-3 of the claim, it appears each instance of the limitation “the one or more external elongate reinforcing element” should be --the one or more external elongate reinforcing elements-- for consistency of the claim language.
With regard to claim 6: Lines 3-6 of the claim, it appears each instance of the limitation “the or each of the one or more external elongate reinforcing elements” is confusingly worded. It appears the limitation should be directed to --each of the one or more external elongate reinforcing elements--.
With regard to claim 8: Line 2 of the claim, it appears the limitation “the one or more external elongate reinforcing element” should be --the one or more external elongate reinforcing elements-- for consistency of the claim language.
With regard to claims 22 and 24-25: Line 1 of each claim, it appears the limitation “an elongate roll-formed structural member” should be --the elongate roll-formed structural member-- for consistency of the claim language.
With regard to claim 24: Lines 2-3 of the claim, it appears the limitation “the external elongate reinforcing elements” should be --the one or more external elongate reinforcing elements-- for consistency of the claim language.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regard to claim 11: Line 6 of the claim, the limitation “the widest region” lacks sufficient antecedent basis. For the purpose of examination, the limitation is considered to be directed to -- a widest region--.
With regard to claim 18: Line 2 of the claim, it’s unclear if the limitation “two external elongate reinforcing elements” is referencing the previously recited one or more external elongate reinforcing elements. For the purpose of examination, the limitation is considered to be directed to --two external reinforcing elements of the one or more external elongate reinforcing elements--.
Claims 11 and 18 are examined as best understood.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-6, 8, 10, 15, 17 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Handschuh Wolfgang Ing. (AT 14226).
With regard to claim 1: Handschuh Wolfgang Ing. discloses an elongate roll-formed structural member comprising:
a pair of generally C-shaped channel elements (A) nested together, the pair of generally C-shaped channel elements (A) forming a body having a substantially rectangular cross-section profile (figs. 4-6), the body comprising:
first and second flanges (M) substantially parallel and spaced apart at a top and bottom of the body respectively (figs. 4-5), and
first and second web portions (N) separating the first and second flanges (M), the first and second web portions (N) being substantially parallel and spaced apart at sides respectively (figs. 4-6), and
wherein the first and second web portions (N) at one or both of the top and/or bottom of the body narrow towards each other and defines a recessed region (O) (figs. 4-6), and
wherein said elongated structural member further comprises one or more external elongate reinforcing elements (C) configured to be coupled onto the recessed region (O) of the elongate structural member (figs. 4-5).
The elongated structural member being “roll-formed” is considered a product by process limitation.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
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Fig. 4: Handschuh Wolfgang Ing. (AT 14226)
With regard to claim 2: Handschuh Wolfgang Ing. discloses one of the first and second flanges (M) is adjacent the recessed region (O) and has a flange width less than a width of a space between the first and second web portions (N) (fig. 4).
With regard to claim 3: Handschuh Wolfgang Ing. discloses that the flange (M) adjacent the recessed region (O) has a flange width at least less than a widest space between the first and second web portions (N) (fig. 4).
With regard to claim 4: Handschuh Wolfgang Ing. discloses that the recessed region (O) is at the uppermost end of the body (fig. 4).
With regard to claim 5: Handschuh Wolfgang Ing. discloses that the one or more external elongate reinforcing elements (C) coupled onto the recessed region (O) results in a box-section in which the one or more external elongate reinforcing elements (C) lie within a general rectangular profile or envelope (fig. 4).
With regard to claim 6: Handschuh Wolfgang Ing. discloses that the recessed region (O) comprises a recess width (extending between the first and second web portions N) (fig. 3):
a) between 1 and 5 times a wall thickness of each of the one or more external elongate external reinforcing elements (C) (figs. 4 and 6), or
b) between 1 and 3 times the wall thickness of each of the one or more external elongate external reinforcing elements (C) (figs. 4 and 6).
With regard to claim 8: Handschuh Wolfgang Ing. discloses that the one or more external elongate reinforcing elements (C) coupled to the recessed region (O) form a wall thickness:
between 2 and 6 times a wall thickness of the web portions (N) without reinforcement (figs. 4 and 6).
With regard to claim 10: Handschuh Wolfgang Ing. discloses that fasteners (J2) to couple the one or more external elongate reinforcing elements (C) onto the body, the fasteners being one of screws rivets, and bolts (abstract; pg. 1, last 2 lines and pg. 2, lines 14-16 of translation).
With regard to claim 15: Handschuh Wolfgang Ing. discloses that the one or more external elongate reinforcing elements (C) extends a partial length along the elongate member.
With regard to claim 17: Handschuh Wolfgang Ing. discloses that at least one external elongate reinforcing element (C) of the one or more external elongate reinforcing elements (C) is coupled to both the first and second flanges (M) (figs. 4-6).
With regard to claim 19: Handschuh Wolfgang Ing. discloses that the first and second web portions (N) have indentations in a mid-region extending longitudinally along the elongate structural member to improve structural performance of the elongate structural member (figs. 4-6).
With regard to claim 20: Handschuh Wolfgang Ing. discloses that a cross-section of the body including the recessed region (O) extends along at least a significant portion of the length of the elongate member (figs. 4 and 13).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 21-22 and 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Handschuh Wolfgang Ing. (AT 14226) in view of Hayward (GB 2 288 417 B).
With regard to claim 21: Handschuh Wolfgang Ing. discloses a method of forming an elongate structural member (figs. 4-6) comprising:
providing metal sheets (figs. 4-6; abstract; claim 5),
forming a pair of generally C-shaped channel elements (A) (figs. 4-6),
nesting the pair of generally C-shaped channel elements (A) together to form a body having a substantially rectangular cross-section profile (figs. 4-6), the body comprising:
first and second flanges (M) substantially parallel and spaced apart at top and bottom of the body respectively (figs. 4-6), and
first and second web portions (N) separating the first and second flanges (M), the first and second web portions (N) being substantially parallel and spaced apart at respective sides (fig. 4), and
forming a recessed region (O) where the first and second web portions (N) at one or both of the top and/or bottom of the body narrow towards each other (fig. 4), and
fitting one or more external elongate reinforcing elements (C) with a predetermined length onto the recessed region (O) (fig. 4).
Handschuh Wolfgang Ing. does not disclose an elongate structural member is rolled-formed, wherein the forming the metal sheets comprising bending the metal sheets with rollers and bending the metal sheets to form the recessed region.
However, Hayward discloses method of forming an elongate roll-formed structural member (figs. 1-2) comprising: providing metal sheets (fig. 2; pg. 8, lines 11-15), bending the metal sheets with rollers to form a pair of generally C-shaped channel elements (1) (figs. 1-2; ; pg. 8, lines 11-15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Handschuh Wolfgang Ing. to have the elongate structural member being rolled-formed, wherein the forming of the metal sheets comprises bending the metal sheets with rollers such as taught by Hayward in order to provide increased strength compared to heat forming. Handschuh Wolfgang Ing. as modified by Hayward would result in bending the metal sheets to form the recessed region.
With regard to claim 22: Handschuh Wolfgang Ing. discloses providing fasteners to couple each external elongate reinforcing element (C) onto the recessed region (O) (fig. 4).
With regard to claim 24: Handschuh Wolfgang Ing. discloses that the predetermined length (length of the web) of the one or more external elongate external reinforcing elements (C) is less than the length (length of the web) of the body of the elongate structural member to reinforce part of the elongate structural member (fig. 4) .
With regard to claim 25: Handschuh Wolfgang Ing. discloses forming indentations extending longitudinally in a mid-region along the elongate roll-formed structural member capable of improving structural performance of the elongate roll-formed structural member (figs. 4-6).
With regard to claim 26: Handschuh Wolfgang Ing. discloses a cross-section of the body including the recessed region (O) extends along at least a portion of the length of the elongate member (fig. 4-6).
Allowable Subject Matter
Claims 16 would be allowable if rewritten to overcome the claim objections set forth in this Office action.
Claims 11 and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The combination of all the elements of the claimed elongate roll-formed structural member including all the limitations of the base claim and any intervening claims is not adequately taught or suggested in the cited prior art of record.
Response to Arguments
The previous objection of claims 1-6, 8, 10-11, 15-20 and 24 has been withdrawn in view of the amendment filed 9/16/26. Note that rejections not addressed have been reiterated above.
The previous rejection of claims 2-3, 11, 16- 20 and 24-26 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of the amendment filed 9/16/26. Note that rejections not addressed have been reiterated above.
Applicant’s arguments with respect to the claim(s) have been considered but are moot in view of the new grounds of rejection.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 9/16/25 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633